Transferring A Contested Trademark to a Limited Company

November 19, 2014

pama

Abad Elrazak Abido is the owner of a registered trademark number 244831 for Pama, for shoes. He wishes to transfer ownership to a limited company: Pama Shoe Manufacturers LTD and to a partnership called Pama Porza, and submitted a request for transfer of ownership signed by him and the company.

This is actually the second attempt to transfer ownership, where the first attempt was dismissed on procedural grounds. Following that first attempt, an appeal was filed to the District Court. This appeal is pending, but meanwhile the owner has again submitted a request to transfer the mark and the present ruling relates to this request.

Section 48a of the Trademark Ordinance 1972 allows both pending and issued marks to be transferred from one owner to another, but gives the commissioner the right to refuse to register the transfer of ownership if it appears to be likely to confuse the public as to the origin of the goods or apparently contravenes the common good.

Puma S.E. opposed the transferring, arguing that the request had procedural flaws. In addition, they claim that the request is designed to create anonymity regarding the source of the shoes. The logic presumably being that the mark is being used to sell counterfeit shoes and Puma prefer to litigate against a person than a company as it is easier to collect if they win.

The Applicant submitted a Palestinian Authority trademark decision concerning a similar opposition, where registration of the mark Pama was allowed, and also submitted a certificate of incorporation, showing that the company to which the mark is to be transferred is properly incorporated in the Palestinian Authority (West Bank). The Applicant further claimed that there was a mediated settlement between him and Puma that allowed him to sell shoes under the PAMA brand in Israel and in the West Bank. The existence of the partnership remains a little cloudy.

Ms Shoshani Caspi ruled that the parties should submit affidavits and then attend a hearing where the relationship between Abad Elrazak Abido, the company and the ‘partnership’ could be clarified by cross-examination of the parties by the parties. Until such a hearing, she felt unable to address the issue of the public good. She noted that Mr Abido rights were not being compromised, as he would have the opportunity to provide additional documentation to substantiate his case. In the meantime, the request for transfer of ownership is suspended and no costs were-ruled.

COMMENT

Those with an interest in trademarks that are inspired by and somewhat similar to the marks of leading brands will note the four striped sneaker opposed by Adidas that was appealed to and upheld by the Supreme Court. Also of note is the Tigris decision which I am somewhat critical of, as it doesn’t relate to sports goods.

I have a working relationship with a Shechem (Nablus) based trademark lawyer which may help clients registering and enforcing in both the West Bank as well as in Israel. I suspect that proceedings are very different before the two regimes.


Requests for Costs Must be Timely Filed

November 19, 2014

missed

Back in June 2014, I reported on a decision by the Israel Commissioner of Patents and Trademarks that the Chinese brand Lovol and the older and more established Swedish brand Volvo are not confusingly similar. Having persuaded the Israel Patent Office that their mark was registered in good faith and was not confusing, Hebei Aulion Heavy Industries LTD, who own the Lovol mark, were entitled to file a request for costs.

The request for costs should have been filed within two months, as per Patent Office Circular M.N. 80. Hebei missed this deadline and, three and a half months after the hearing, they filed a late request for an extension to file costs.

Volvo opposed this request.

Hebei argued that the delay was caused because they waited to see whether the ruling would be appealed. The Commissioner did not see that connection between a possible Appeal and the right to file, and the right to costs for one proceeding is quite independent of whether the ruling may eventually be appealed or overturned. Furthermore, appeals should be filed within one month of a trademark ruling, whereas a request for costs may be filed within two months of a ruling. Where an extension is requested in an ex-partes proceeding it should be requested in advance and not retroactively.

A further consideration submitted by Hebei’s agent-of-record (Wolf Bregman Goler) was that they were unaware of the Circular and their client should not be penalized for their ignorance in this manner.  The Commissioner noted that the Circular issued back in February 2010 and that the agent-of-record was experienced and regularly appeared before the patent office in hearings and the like.

Citing A. Goren on Civil Procedure, the Commissioner noted that ignorance of the Law may be an excuse if objectively the Law is unclear and there hasn’t been any case-law, or, if subjectively, the legal representative had made efforts to avoid the mistake. In this instance, no evidence or arguments were submitted to establish objective or subjective grounds for clemency.

The agent of record argued that his client had a basic right to costs, that the Trademark Ordinance and regulations doesn’t establish a deadline, and so the Circular should not be considered binding. The Commissioner rejected this argument, considering that the Circular filled a lacuna and gave certainty as to whether costs would be requested or not. He considered that different practitioners should be held to the same standards. Costs should be requested at the end of a proceeding and not any time thereafter. There were no good reasons to consider the two month period insufficient, so the request was thrown out.


Combining Similar Proceedings

November 19, 2014

combining hearings

C.T.S. LTD filed Israel trademark application numbers 2253382 and 253359 “Lactofil” and לקטופיל. The Mark covers Cosmetic preparations namely lotions, creams, mousses and soaps for nourishment and cleaning of the skin and face all in Class 3. “” Laboratorios Genesse, S.L. opposes the marks

Meanwhile, Laboratorios Genesse, SL. has filed Israel trademark application number 249389 for Lactivit for Soaps, gels, perfumery, essential oils, cosmetics, lotions for hair and skin care, creams for hair and skin care, and dentifrices also in Class 3. C.T. S. LTD are opposing this registration.

Both parties propose combining the hearings. The Lactofil hearing was scheduled for 29 October 2014.

The legal issue in both cases is likelihood of confusion with the similar product of the other party. The parties and the issues in both cases is the same. Combining the cases saves the parties time and expense, and saves judicial resources. In one case there are additional claims of inequitable behavior, but this is not seen as sufficient justification to hear the cases separately.

As both parties have equal rights, Ms Yaara Shoshani, Adjudicator at the Israel Patent and Trademark Office ruled the cases are to be combined, however in each case, at the combined hearing, the Opposer has the right to cross-examine the applicant’s witnesses and only then may the Opposer’s witnesses be cross-examined.

In the circumstances, no costs were awarded.

Decision to Combine Similar Trademark Proceedings, Yaara Shoshani Caspi 6 October 2014. 

COMMENT

Apart from the parties in question, there is a third party of importance, i.e. the public. It seems to me that combining the proceedings is not only economical for the parties and for the public purse in terms of judicial expense, but also is most likely to result in a sensible ruling.


Another Israel Patent Lapses Despite Timely Payment of Fees

November 11, 2014

Online payment

Israel patent number 213651 relates to a method of saving water. The patent issued on 31 August 2013, and the deadline for paying the renewal fee was 30 November 2013. Due to failure to pay the fee in a timely manner, once the grace period passed, it was considered as having lapsed from November 2013 and a notice that the patent had lapsed was subsequently published in the Israel Patent Office Journal of July 2014.

In October 2014 the patentee filed a request for reinstatement. The agent of record argued that the patentee had paid the renewal fee in a timely manner, however proof of payment was not sent to the Israel Patent Office. On discovering the error in June 2014, the agent of record contacted the patent office to discover what had happened, believing that proof of payment had been submitted. On discovering that proof of payment had not been received at the patent office, he took steps to revive the patent.

From the chain of events, the Deputy Commissioner, Ms Jacqueline Bracha, was assured that the patentee had not intended the patent to lapse and the fact that the patent had been paid but only the proof of payment had not been submitted was considered further evidence that the patentee had intended to renew the patent. There was a lack of explanation as to why so much time had passed from when the fact that the patent had lapsed was known to the patentee to when a reinstatement request was filed. Nevertheless, noting that the Israel Patent Office was closed for festivals, Ms Bracha allowed the request for reinstatement, and  this has published for opposition purposes.


Kerem Ben-Zimra – Competing Marks

November 10, 2014

competing wine

David Nachmias filed Israel TM Application no. 258163 for “Kerem Ben Zimra Winery” The Hebrew word kerem means vineyard). Not long afterwards, Yekev Ben Zimra LTD filed Israel trademark application number IL 258562 for יקב בן זמרה (transliterates as Yekev Ben Zimra and means Ben Zimra Winery) and IL 258563 for Ben Zimra Winery. All the marks cover wines in class 33.

Since the marks are similar and were co-pending, in January 2014, the Israel Trademark Office initiated a competing marks procedure under Section 29 of the Trademark Ordinance 1972.

In competing rights procedures, the first to file (in this case Nachmias) does not necessarily prevail. Other factors to be considered are the extent of use of the marks and whether there is inequitable behaviour of either or both parties. The parties are given an opportunity to file evidence to support their rights to the mark.

In this instance, the parties did not file evidence and in August 2014 the Trademark Office gave one month’s notice to the parties to file evidence or the marks would be considered withdrawn. This was ignored, so Ms Yaara Shoshani Caspi closed the files but noted that the parties could refile their applications.

COMMENT

Kerem Ben Zimra is a village near Tzfat that was founded in 1949. It takes its name from the Rabbi from the period of the Mishna, Rav Yossi Ben Zimra haCohen, whose grave is found in the village. David Nachmias and Yekev Ben Zimra both have addresses in the village.

There are other wineries in Kerem Ben Zimra. The Adir Winery has a range called Ben Zimra. The wines produced in Kerem Ben Zimra have a good reputation. As always with competing use for a place-name, it is not clear whether either or both parties should be able to register their marks. In this instance, the parties seem to have backed off a legal battle. It could, however, be a case of both sides losing. What is clear is that there is a likelihood of confusion if two or more wineries call their produce Ben-Zimra.


Wyeth’s Patent Term Extension for Bazedoxifene Cancelled Prior to ReExamination

November 10, 2014
Rocking the boat...

Rocking the boat…

There was an amendment to the Israel Patent Law earlier this year. This amendment (11th amendment) relates to patent term extensions. The amendment was announced, but did not go into immediate effect.

Wyeth filed a request to correct a mistake in the Patent Extension Order concerning Israel Patent Number 120701. The extension Order was given on 23 February 2014, and extends the basic patent for Bazedoxifene which, without the extension, would have lapsed on 18 April 2017.  The intention to grant an extension until 26 August 2019 was given in October 2013 and published back then. The calculation was based on the Law prior to the eleventh amendment.

On 18 September 2014, Wyeth submitted a request to correct the Extension Order to provide protection according to the regime after the eleventh amendment.

Section 16 of the Amendment states:

16(a) this Law will apply to Extension Order requests that are pending before the Commissioner of Patents on the day that this Law comes into effect, and for future requests for patent term extension.

Wyeth’s contention is that the amendment to the Law came into effect on 27 January 2014 and due to the publication for opposition purposes, the period for opposition finished on 31 January 2014, so, at the time the Law came into affect no Patent Term Extension had been granted and the request for patent term extension for IL 120701 must, therefore, be considered as pending at the time the amendment came into effect.

The amendment narrowed down the list of countries that could be relied upon for Israel to grant a corresponding extension. Instead of anywhere in Europe that grants an extension, only Italy, UK, Germany, Spain and France could be taken into account. Significantly, Japan was no longer considered a relevant country in regards to patent term extensions. Wyeth’s patent was extended on the basis of the extension of the corresponding Japanese patent. By ignoring Japan, a longer term could be requested.

There is an interesting twist here. In October 2013, the FDA issued approval for Bazedoxifene together with conjugated estrogens as Duavee. This fact was not taken into account in calculating the Patent term Extension and could act against Wyeth. The Commissioner ruled that it would be improper to apply some sections of the amendment and not others, and that the Israel Patent Office should consider the ramifications of this FDA approval as well. In consequence, the Commissioner did not amend the ruling, but rather canceled it as a wrongfully given bureaucratic decision. He ruled that the published patent term extension was null and void and that the Application would be subjected to accelerated re-examination under the amended Law with the ramifications, if any, of the FDA approval of Duavee also considered.

Various legal precedents were given to support this contention and the solution it offered. The Commissioner noted that Patent Term Extensions are not final and could be reconsidered, even previous to the eleventh amendment.  He related to previous rulings concerning Teva vs. Abbott, Neurim, Lundbeck vs. Unipharm and Roche.

In addition to being able to oppose any subsequent patent term extension, the cancellation of the existing patent term extension may also be opposed by third parties.

Ruling Concerning Patent term extension to IL 120701 to Wyeth, 3 November 2014.


A Costs Ruling in Camtek vs. Orbotech

November 9, 2014

legal costs

Cantek and Orbotech both make optical testing equipment for the semiconductor industry. Both are Israeli companies. Since they directly compete, there seems to be a lot of bad blood between them.

Israel Patent Application 179995 to Orbotech was successfully opposed by Camtek, with a ruling cancelling the patent issuing on 20 July 2014. Whilst holding the patent to be void, Ms Bracha rejected a claim by the Opposer that Orbotech had acted inequitably. She gave Camtek three weeks to request costs.

On 31 July 2014 Camtek requested 302,895 Shekels costs (including VAT).  The request for costs were supported by an affidavit from Camtek’s IP manager Michael Lev.

The sum includes legal fees of 288,687 Shekels to outside counsel, Adi Levit, 8208 Shekels to the witness Mr Golan, and 6000 Shekels for intermediate costs awarded. All cost requests were supported by documentary evidence such as invoices from outside counsel and salary slips from the witness.

Orbotech, represented by Reuven Borchowski, did not counter the request for costs.

In her ruling, Ms Jacqueline Bracha reviewed the intermediate costs to see whether they were affected by the final decision and came to the conclusion that where she had ruled that the costs were incurred by Opposer unnecessarily, they should not be discounted.

In her final ruling, Ms Bracha accepted the legal and witness costs of 296,895 Shekels.

COMMENT

I have no doubt that Opposing counsel worked hard. Nevertheless, it does seem that the costs awarded are very high. One wonders if Orbotech shouldn’t have made some effort to challenge these. Clearly doing so would have incurred additional costs from their counsel, nevertheless, it does seem likely that this would have been time well spent.

 


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